Keeping a U.S. trademark registration alive

The name is registered. The framed certificate looks reassuring. Meanwhile, the business retires one product, adds another, changes its logo, and moves to a new address. Trademark maintenance is where the official record meets that ordinary movement.

The certificate alone does not keep a U.S. federal registration alive. You keep it alive by filing a declaration that you still use the mark (or that your nonuse is excused) at set intervals, and by renewing every ten years. Miss the last deadline and the registration is canceled or expires 1. It cannot be reinstated; the only way back is a new application 8. Treat maintenance as a periodic, sworn account of the brand you actually sell, not as a subscription bill.

Know which calendar belongs to your registration

Count every deadline from the registration date printed on your certificate, not from the date you filed the application 8. For a registration that is not based on the Madrid Protocol, file:

1. Between the 5th and 6th anniversaries: a Section 8 declaration of use or excusable nonuse.
2. Between the 9th and 10th anniversaries: a combined Sections 8 and 9 filing (declaration plus renewal).
3. Every ten years after that (19th–20th, 29th–30th, and so on): the combined Sections 8 and 9 filing again. 1

File on the USPTO's maintenance forms page. Fees are charged per class; check the current amounts on the USPTO fee schedule 12. Each deadline has a six-month grace period, but filing in it costs an additional fee 1. A deadline that falls on a weekend or federal holiday moves to the next business day 1.

File early in the window. If the USPTO rejects the filing, you then have time to fix correctable errors without an extra fee 1. Put the dates in your own calendar: the USPTO sends courtesy email reminders, but you must file on time even if no reminder arrives 1. Official USPTO email comes only from @uspto.gov addresses. Ignore private mailings that offer to "renew" your mark for a fee; the USPTO warns that many are fraudulent 1.

If your U.S. application serial number begins with 79, your registration is a Madrid Protocol extension of protection and runs on two calendars 1:

• With the USPTO: file a Section 71 declaration of use or excusable nonuse between the 5th and 6th years, between the 9th and 10th years, and every ten years after that, counted from the U.S. registration date. The same six-month grace period applies; miss it and the registration is canceled 4.
• With WIPO: renew the international registration directly with the International Bureau every ten years from its date. The USPTO does not handle this renewal 14.

The two are separate obligations. Renewing with WIPO does not file your Section 71 declaration, and the Section 71 declaration does not renew the international registration 4.

The goods and services should still be true

Suppose a maker registered a mark for six products but now sells only two. The declaration may list only goods and services you are actually selling under the mark, or for which nonuse is excused by special circumstances, and you sign it under a warning that willful false statements are punishable under 18 U.S.C. 1001 3. So before you file:

1. Check every item in the registration against what you sell today.
2. Delete the items you no longer use in the declaration itself. Deleting there is free 1.
3. Do not file first and delete later. Deleting after filing but before acceptance costs a fee per class, and if that fee is not paid by the office action deadline, the whole registration is canceled 1.

Between maintenance filings, delete dropped items with a free Section 7 request 1. Excusable nonuse is rare; claiming it means stating the last date of use, the reason, and the steps you are taking to resume 12.

Each declaration needs one specimen per class 1. For goods, use a photo of the mark on the product, its label, tag or packaging, or a webpage that shows the mark next to the product with a price and a way to buy, captured with its URL and access date. For services, use advertising, brochures, signage or a website that ties the mark to the service. A mockup, printer's proof, rendering or digitally altered image is not acceptable 5. Save dated examples as the business runs: photograph packaging when it comes back from the printer, capture the shop page with its URL and date. Then the evidence is ready when the window opens.

The USPTO audits selected Section 8 and 71 declarations. A random audit applies to registrations with one class listing four or more goods or services, or two or more classes listing at least two each; a directed audit follows doubts about use, such as a specimen that looks digitally altered 3. The audit office action asks for proof of use for the listed items. Answer by the later of six months from the office action or the end of the filing period (not counting the grace period); no answer cancels the whole registration. Each class with deletions costs a fee, and deleted items cannot be restored 3. If you receive an audit office action or need to claim excusable nonuse, have a trademark attorney review your response before you file it; a wrong or missing answer can cost the registration.

Optional strength is different from required maintenance

Section 15 lets you file an optional declaration of incontestability for a Principal Register registration once the mark has been in continuous use for five consecutive years after registration, with no final decision against your ownership and no proceeding about it pending 27. File it within one year after such a five-year period ends 7; if you qualify in the 5th–6th year window, use the combined Sections 8 and 15 form 1.

Section 15 does not replace the Section 8 declaration or the renewal. Incontestable does not mean unchallengeable either: the cancellation grounds that can be raised at any time still apply, a prior user whose state-law rights began before your registration keeps them, and a generic name never becomes incontestable 7.

Keep the record current as the business changes. If the owner shown on your filing does not match USPTO records, the filing can be refused 1. For a non-Madrid registration, record an assignment or name change in Assignment Center or submit evidence of the change with the maintenance filing. For a Madrid-based registration, file WIPO form MM5 or MM9 with the International Bureau; the USPTO cannot record those changes 1. The steps are in Updating names and ownership in official records.

A Section 7 request handles minor, non-material corrections and lets you delete or narrow goods and services 16. It cannot add or broaden goods or services, and it cannot make a material change to the mark. A redesigned logo that changes the mark, or a new product line, needs a new application 6.

Make maintenance feel ordinary

A small business needs only a short routine:

1. Keep the registration number, registration date and serial number in one place, with the certificate.
2. Enter every maintenance window and its grace-period end in your calendar, ahead of the USPTO's own reminder.
3. Save a dated specimen whenever packaging, labels or the website change.
4. Record any change of owner, name or address when it happens, not when a filing is due.
5. After each filing, check TSDR: enter the registration number and click "Status". Review typically takes one to two months, and notices and office actions appear there, so check again a couple of months later 1.

The reward is continuity. The name your customers have learned to trust stays connected to a record that accurately says what you claim.